ANHEUSER-BUSCH INCORPORATED v BUDWEISER BUDVAR NATIONAL CORPORATION CA CA158/01

ANHEUSER-BUSCH INCORPORATED v BUDWEISER BUDVAR NATIONAL CORPORATION CA CA158/01 2 December 2004IN THE COURT OF APPEAL OF NEW ZEALAND CA158/01BETWEEN ANHEUSER-BUSCH INCORPORATED Appellant AND BUDWEISER BUDVAR NATIONAL CORPORATION Respondent Hearing: 2 December 2004 Court: Gault, McGrath, and Glazebrook JJ Counsel: B W F Brown QC and G F Arthur for Appellant J G Miles QC and B M Sullivan for Respondent Judgment: 2 December 2004 (On the papers)JUDGMENT OF THE COURT ON APPLICATION FOR COSTS[1] The judgment of the Court in this appeal was delivered on 19 September 2002 and is reported at [2003] 1 NZLR 472. All questions of costs in this Court and the High Court were reserved in that judgment and leave to file memoranda given. The appellant, Anheuser-Busch Incorporated, has now applied for costs and also for directions as to the final form of the sealed order of this Court. The respondent, Budweiser Budvar National Corporation, has filed a memorandum responding to both issues. We have considered these matters on the papers submitted to us. [2] The appeal was brought against the High Court's rejection of claims brought by the appellant against Budweiser Budvar National Corporation for rectification of the register of trade marks, trade mark infringement, breach of the Fair Trading Act and passing off. The claims related to the use of labels featuring the words"Budweiser Budvar" and "Budejovický Budvar". The outcome of the appeal was that the appellant succeeded on one aspect of its action for trade mark infringement. That related to the use of the word "Budweiser", which forms part of its trade mark. The Court held that the use of the word on all of the respondent's bottles was likely to be taken as a use of the appellant's trade mark. As the "own name" defence could not apply on the facts, the appellant was entitled to relief. The judgment of the President, concurred in by other members of the Court, stated the result as follows:[139] AB is entitled to an injunction restraining the first and second respondents from importing, advertising, offering for sale or selling beer under or by reference to the name "Budweiser" or otherwise infringing Registered Trade Mark No 150926. [140] There will be an order for the delivery up to the appellant, or destruction on oath, of all product, labels, advertisements or other promotional material in the possession or under the control of the respondents, the use of which would offend against the injunction granted. [141] Although there will be obvious difficulties in assessing the influence of the word "Budweiser" on sales made, the appellant is entitled to elect an inquiry as to damages or an account of profits. Any issues arising should be the subject of application to the High Court.[3] The parties have each filed extensive submissions on costs in this Court and the High Court, raising issues concerning the principles governing the exercise of the Court's discretion to award costs. Because of the view we take of this case it is unnecessary to discuss these questions in this judgment. We have reached the view that costs in the High Court should be set by that Court, which is in a better position to fix those costs. That matter is therefore remitted to the High Court for determination. [4] As to the costs of the appeal, it was heard over two days. At that time costs in this Court were generally awarded to a successful party at the rate of $5000 per day. It is appropriate that the appellant, who was partially successful, should get a portion of its costs on this basis and we have decided that the appropriate portion is one half. There will accordingly be an order that the respondent pay the appellant $5000 in costs, together with all reasonable disbursements incurred in the appeal as these would have been incurred regardless of the scope of the appeal that was brought. If counsel are unable to agree on disbursements they are to be fixed by the Registrar.[5] We direct that the order take the form proposed by the appellant. That form reflects what was said in the judgment of the President at [139]. It is of appropriate scope and a conventional form of relief for the injury concerned.Solicitors: A J Park, Wellington, for Appellant Henry Hughes & Co, Wellington for Respondent